Not only do fast fashion retailers have a serious track record of copying, they have recently taken to fighting back when they are called out for it. Forever 21 recently filed suits against adidas and Gucci, and now H&M has slapped Wildfox Couture with a new lawsuit, claiming that it is not running afoul of federal trademark law for marketing and selling a sweatshirt bearing the words “Toronto Wildfox.”
According to the lawsuit, which was filed in New York federal court on Monday, the Swedish fast fashion giant has asked the court to hold that it is, in fact, not infringing Wildfox Couture’s federally registered trademark (for the word "Wildfox" for use on garments, including "tops"), and thus, that Wildfox does not have a case for trademark infringement.
As H&M sets forth in its complaint, it “created” the $19.99 sweatshirt at issue, which it began selling it earlier this year. The world's second-largest apparel company alleges that it “selected the name ‘Wildfox’ arbitrarily as the name of a fictitious team based in Toronto,” and further claims that “the Basketball Design appears on one style sweatshirt, the H&M Motif Sweatshirt, sold under the H&M brand.”
H&M asserts that in a letter dated September 15, 2017, “Wildfox threatened to take action against H&M, asserted that H&M is engaging in acts of trademark infringement and unfair competition, and demanded that H&M immediately cease and desist from selling the H&M Motif Sweatshirt.”
Legal counsel for H&M responded to Wildfox's letter on October 2, 2017, claiming that based on its usage of the word "Wildfox" in a "decorative" manner and not as an indicator of source (aka: as a trademark), "typical purchasers would not associate the H&M Design with [Wildfox]."
(Note: The central inquiry in a trademark infringement case is whether the average consumer would be confused as to the source of the allegedly infringing products (H&M's Motif Sweatshirt in this case). In other words: Would the typical consumer think that Wildfox had collaborated with H&M on the Motif Sweatshirt or was in some way affiliated with H&M due to its use of the "Wildfox" trademark? If so, then that is trademark infringement).
In its suit, H&M claims that Wildfox's “demands and threats have placed a cloud over ]its] rights to continue selling the H&M Motif Sweatshirt.” Oh, the irony.
Wildfox’s founder Jimmy Sommers told TFL exclusively on Tuesday that “this is a textbook example of a global retailer stomping on the trademark rights of a much smaller brand. H&M – which has a history of stealing other people’s creative works – is using an exact copy of the WILDFOX trademark, and is nonetheless, suing Wildfox in response to our request that they stop selling a counterfeit Wildfox product.”
Sommers – who launched founded Wildfox in 2007, a brand that boasts a lineup of products that consists quite significantly of graphic-adorned sweatshirts – further told TFL, “This lawsuit is a glaring example of how H&M is willing to trample on the intellectual property rights of smaller companies, and is clearly brought in bad faith. The expense of defending against this bogus lawsuit will likely be greater than the profits to be earned off the counterfeit H&M sweatshirts.”
“If H&M had any sense of fairness or respect for other’s work, it would simply stop selling the sweatshirts, which make up a miniscule portion of its $21 billion in sales,” says Sommers. “Instead, they are attempting to punish Wildfox for sticking up for itself.”
* The case is H&M Hennes & Mauritz GBC AB and H&M Hennes & Mauritz L.P., v. Wildfox Couture, LLC and Wildfox Couture IP Holdings, LLC, 1:2017-cv-07956 (SDNY).